Action Items: Implementing Bayh-Dole Act Updates

May 14, 2018
Marshall Gerstein Alert

Updated Bayh-Dole Act regulations are effective today. Here are the key steps federal funding recipients will want to take to comply with the new rule and those licensing federally funded technology will want to know.

Alert grants and contracts office to request an exception to the new rule when existing grants or contracts are amended.

The new rule applies to funding agreements executed after May 14, 2018, which means that it should be some time before subject inventions covered by the new rule make their way to your office, giving you some time to get a process in place to manage new deadlines. However, if an existing funding agreement is modified, the funding agency can elect to make it subject to the new rule going forward. Give yourself more lead time by asking your grants and contracts office to negotiate for an exception to the funding agency’s election.

Confirm – or implement - written employee agreements. Section 401.14(f)(2)

Written agreements with employees are now required (excluding nontechnical employees). In addition to assigning subject inventions to the contractor, the agreement should include an obligation to report subject inventions and execute papers for patent applications and establish the government’s rights.

Written employee agreements could be implemented across the board or alternatively could be limited to federal grant participants only. Review existing employee agreements to confirm that the scope covers what the new rule requires. Marshall Gerstein is here to help with that review.

Adjust decision timelines for patent prosecution. Section 401.14(f)(3)

The notice period to let the funding agency know that you plan to discontinue patent prosecution is now 60 days before the statutory deadline (up from 30 days). To meet the new timeline, you should be considering prosecution decisions at least a month earlier. Consider having your prosecution counsel docket reminders prior to the 60-day deadline.

Docket early conversion decisions for provisional applications and plan to request extensions. Section 401.14(c)(3)

To give the agency the required 60 days’ notice, the Bayh-Dole deadline to convert a provisional patent application for subject inventions is now 10 months, which means conversion decisions now need to happen two months earlier. One year extensions for compliance will generally be granted (but note that this does not extend the PTO deadline). To avoid losing two months of patent term, you will want to request the extension.

Step up your compliance with reporting deadlines. Section 401.14(d)(1)

Under the new rule, there is no time limit for the government to take title based on noncompliance with the required deadlines for disclosure and election of title. Previously, the government had 60 days to take action after it learned of the failure. Without that time limit, noncompliant reporting runs a greater risk of creating a “cloud on the title” of federally funded inventions.

For further information on the updated Bayh-Dole Act or to discuss your specific situation, contact Julie Watson or Pam Cox.

Disclaimer:  The information contained in this alert is for informational purposes only. Under applicable rules of professional conduct, this communication may constitute Attorney Advertising. © 2018 Marshall, Gerstein & Borun LLP. All rights reserved.

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